September 2024 Federal Circuit Newsletter (Japanese)
September 2024 Federal Circuit Newsletter (Chinese)
Combining Abstract Ideas Does Not Make Them Less Abstract
In Broadband Itv, Inc. v. Amazon.Com, Inc., Appeal No. 23-1107, the Federal Circuit held that when assessing patent eligibility under 35 U.S.C. § 101, combining two abstract ideas does not make either less abstract, and conventionality can be analyzed at both steps of the Alice test.
Broadband iTV, Inc. sued Amazon.com and related entities (Amazon), alleging infringement of five patents. Amazon moved for summary judgment that Broadband’s patents claimed patent-ineligible subject matter. The district court granted Amazon’s motion, finding that Broadband’s patents claimed patent-ineligible subject matter and were therefore invalid under § 101. Broadband appealed.
The Federal Circuit affirmed. Applying step one of Alice, the Federal Circuit found that the claims of four asserted patents were directed to the abstract idea of receiving metadata and organizing the display of video content based on that metadata. The court agreed with the district court that combining two abstract ideas does not render either less abstract. For the fifth patent, the Federal Circuit found the claims were directed to the abstract idea of collecting and using viewing history to recommend categories of video content. The court distinguished Core Wireless and Data Engine, where the claims were not abstract because they were directed to a technological solution (an improved structure or function) to a known technological problem. In contrast, the Federal Circuit found that Broadband’s claims were not directed to any specific technological solution. Applying step two of Alice, the Federal Circuit agreed with the district court that nothing in the claims transformed them into significantly more than the abstract ideas themselves.
The Federal Circuit also rejected Broadband’s argument that the district court erred by assessing the conventionality of the claimed inventions at both Alice steps. The court explained that it may be necessary to analyze conventionality at both Alice steps to determine whether a claim is directed to a longstanding or fundamental human practice (in step one) and what the patent states is the claimed advance over the prior art (in step two). As the Federal Circuit reiterated, “there is no bright line between the two steps.”
An Expert Witness Need Not Have Been a POSITA at the Time of the Invention
In Osseo Imaging, LLC v. Planmeca USA Inc., Appeal No. 23-1627, the Federal Circuit held that an expert witness can testify from the perspective of a POSITA at the time of the invention even if they did not qualify as a POSITA until later.
Osseo Imaging, LLC sued Planmeca USA Inc., alleging infringement of three patents. The district court jury found that Planmeca infringed Osseo’s patents and that certain claims of those patents were not invalid for obviousness. Planmeca moved for judgment as a matter of law that it did not infringe and the patents were invalid. In its motion, Planmeca argued that the testimony of Osseo’s technical expert should be disregarded because he had not acquired the requisite amount of experience needed to qualify as a person of ordinary skill in the art (POSITA) by the time of the alleged inventions. The district court denied the motion, explaining that Planmeca provided no legal support for its argument that experts must attain their expertise prior to the alleged date of invention. Planmeca appealed.
The Federal Circuit affirmed. The Federal Circuit agreed with the district court that there is no timing requirement for when POSITAs acquired their skill in order to testify from the perspective of a POSITA. As the court explained, obtaining at least the ordinary skill in the art at any time is the sole qualification an expert must meet to testify from the perspective of a POSITA—“nothing more is required.” The Federal Circuit also found that Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369 (Fed. Cir. 2022) did not support adding the timing requirement proposed by Planmeca. The court explained that Osseo’s expert undisputedly qualified as a POSITA, and therefore Kyocera was inapplicable because it only addressed whether an expert who never qualified as a POSITA at any time could testify from a POSITA’s perspective. Rejecting the proposed timing requirement, the Federal Circuit concluded that an expert can acquire the necessary level of skill later and yet develop an understanding of what a POSITA would have known earlier, at the time of the alleged invention. The court also found that the jury’s verdict on infringement and validity was supported by substantial evidence, and therefore affirmed the district court’s denial of judgement as a matter of law on those issues.
Tying Claimed Technological Advancements to Specific Technological Methods Is a Winning POV on Patent Eligibility
In Contour Ip Holding LLC v. Gopro, Inc., Appeal No. 22-1654, the Federal Circuit held that claims are patent-eligible under 35 U.S.C. § 101 where the written description discloses improving technology through specific technological means and the claims reflect that improvement.
Contour filed two lawsuits in the Northern District of California, accusing several of GoPro’s point-of-view (“POV”) digital video cameras of infringing Contour’s patents. GoPro argued on summary judgment that the asserted claims were patent ineligible under § 101. The district court agreed with GoPro. The court found under Alice step one that the representative claim was directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the videos’ settings remotely” and under Alice step two that the claim recited only functional, results-oriented language without indication that the physical components are behaving in any way other than their basic, generic tasks. Contour appealed to the Federal Circuit.
The Federal Circuit reversed. The Federal Circuit held that the claims were “directed to a specific means that improves the relevant technology” rather than an abstract idea at Alice step one. The district court has construed the claims such that they were limited to a particular way “that a camera processor might generate multiple video streams of varying quality for wireless transmission.” The court noted that this mechanism was described in the specification as improving POV camera technology, and held that the claims “thus require specific, technological means … that in turn provide a technical improvement.” The court also rejected GoPro’s argument that the claims were directed to ineligible subject matter because they “simply employ known or conventional components that existed in the prior art.” “[T]hat alone does not necessarily mean the claim is directed to an abstract idea.”
Consistency is Not Key: Inconsistent Infringement Theories Do Not Make Claims Indefinite.
In Vascular Solutions LLC v. Medtronic, Inc., Appeal No. 24-1398, the Federal Circuit held that when the same limitation appears in multiple claims, a patentee’s infringement theories for that limitation may vary from claim to claim.
Vascular Solutions LLC, Teleflex LLC, Arrow International LLC, and Teleflex Life Sciences LLC (collectively, “Teleflex”) filed a patent infringement suit against Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, “Medtronic”), asserting forty claims across seven patents.
The patents claim a catheter containing a “proximal substantially rigid portion.” In some asserted claims, the substantially rigid portion includes a side opening. In other asserted claims, the side opening is recited as separate from the substantially rigid portion. Because both sets of claims were asserted against the same accused device, Teleflex proposed two mutually exclusive theories about which part of the accused device was the “substantially rigid portion.”
The district court noted the inconsistency between the two infringement theories and sought a construction that would make clear where the “substantially rigid portion” ended on the accused device. Unable to discern such a construction, the district court held all asserted claims indefinite. Teleflex appealed.
The Federal Circuit explained that the inconsistency between Teleflex’s infringement theories for the “substantially rigid portion” did not make the claims indefinite. Although claim limitations should be construed the same way across related patent claims, a single construction can support different infringement theories for different claims. In this case, the Federal Circuit endorsed a construction that specified the function of the “substantially rigid portion” without specifying its boundaries on the catheter. Because different portions of the catheter could satisfy the same functional construction in the context of different claims, Teleflex was free to advance its two distinct infringement theories without rendering the claims indefinite. Accordingly, the Federal Circuit vacated the district court’s judgment and remanded the case.
Sua Sponte Decision on Ground Not Presented by The Parties is Improper
In Astellas Pharma, Inc. v. Sandoz Inc., Appeal No. 23-2032, the Federal Circuit held that district Court violated the party presentation principle when it sua sponte invalidated a patent under § 101 when the parties did not present that invalidity ground.
Astellas filed suit against Sandoz, Zydus, Lupin, and Lek (collectively, “Sandoz”) for infringement of a pharmaceutical patent directed to compositions and methods of treatment for overactive bladder. In its initial invalidity contentions, Sandoz argued the asserted claims were invalid under 35 U.S.C. §§ 102, 103, and 112. Prior to trial, Astellas agreed to assert only three claims and Sandoz agreed to limit its invalidity arguments to only those under § 112. After a five-day bench trial, the district court found all three asserted claims invalid sua sponte under 35 U.S.C. § 101. Astellas appealed.
The Federal Circuit held the district court’s order invalidating the patent under § 101 improper for violating the party presentation principle. The party presentation principle relies on the parties to “frame the issues for decision” and the court to act as a “neutral arbiter of matters the parties present.” Because the parties did not present argument regarding invalidity under § 101, it was an abuse of discretion for the district court to decide the issue on that ground. The Federal Circuit remanded for consideration of issues raised by the parties, namely infringement and invalidity under § 112.